Master Technology Ownership And License Agreement - Adaptec Inc. and Roxio Inc.
EXECUTION COPY
MASTER TECHNOLOGY OWNERSHIP AND
LICENSE AGREEMENT
between
ADAPTEC, INC.
and
ROXIO, INC.
Effective as of May 5, 2001
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MASTER TECHNOLOGY OWNERSHIP AND LICENSE AGREEMENT
TABLE OF CONTENTS
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PAGE
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ARTICLE 1 DEFINITIONS.................................................................................................1
1.1 ANCILLARY AGREEMENTS................................................................................1
1.2 ASSIGNED TECHNOLOGY.................................................................................1
1.3 ASSIGNED TRADEMARKS.................................................................................1
1.4 CONFIDENTIAL INFORMATION............................................................................2
1.5 COPYRIGHTS..........................................................................................2
1.6 DISPUTES............................................................................................2
1.7 DATABASE RIGHTS.....................................................................................2
1.8 DISTRIBUTION DATE...................................................................................2
1.9 ESCROW MATERIALS....................................................................................2
1.10 GENERAL ASSIGNMENT AND ASSUMPTION AGREEMENT.........................................................2
1.11 INTELLECTUAL PROPERTY RIGHTS........................................................................2
1.12 INVENTION DISCLOSURE................................................................................3
1.13 LICENSED MATERIALS..................................................................................3
1.14 LICENSED TECHNOLOGY.................................................................................3
1.15 LICENSED TRADEMARKS.................................................................................3
1.16 LISTED COMPANIES....................................................................................3
1.17 MASTER CONFIDENTIAL DISCLOSURE AGREEMENT............................................................3
1.18 MASTER PATENT OWNERSHIP AND ASSIGNMENT AGREEMENT....................................................3
1.19 MASTER SEPARATION AND DISTRIBUTION AGREEMENT........................................................3
1.20 PATENTS.............................................................................................3
1.21 PERSON..............................................................................................4
1.22 RESIDUALS...........................................................................................4
1.23 ROXIO BUSINESS......................................................................................4
1.24 SELL................................................................................................4
1.25 SEPARATION DATE.....................................................................................4
1.26 SOURCE CODE.........................................................................................4
1.27 SUBSIDIARY..........................................................................................4
1.28 TECHNOLOGY..........................................................................................4
1.29 THIRD PARTY.........................................................................................5
ARTICLE 2 OWNERSHIP...................................................................................................5
2.1 OWNERSHIP OF ASSIGNED TECHNOLOGY....................................................................5
2.2 ASSIGNMENT OF TRADEMARKS............................................................................5
2.3 PRIOR GRANTS........................................................................................5
2.4 ASSIGNMENT DISCLAIMER...............................................................................5
2.5 RESIDUALS...........................................................................................6
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2.6 TRANSFER OF ESCROW MATERIALS........................................................................6
2.7 NO DELIVERY.........................................................................................6
ARTICLE 3 LICENSES AND RIGHTS.........................................................................................7
3.1 LICENSED TECHNOLOGY.................................................................................7
3.2 LICENSED TRADEMARKS.................................................................................7
3.3 NO PATENT LICENSES..................................................................................8
3.4 THIRD PARTY TECHNOLOGY..............................................................................8
3.5 PERSONAL INFORMATION................................................................................8
ARTICLE 4 CONFIDENTIALITY.............................................................................................9
ARTICLE 5 NO TERMINATION..............................................................................................9
ARTICLE 6 DISPUTE RESOLUTION..........................................................................................9
6.1 NEGOTIATION.........................................................................................9
6.2 PROCEEDINGS........................................................................................10
6.3 CONTINUITY OF SERVICE AND PERFORMANCE..............................................................10
ARTICLE 7 LIMITATION OF LIABILITY....................................................................................10
ARTICLE 8 REPRESENTATIONS AND WARRANTIES.............................................................................10
ARTICLE 9 MISCELLANEOUS PROVISIONS...................................................................................11
9.1 DISCLAIMER.........................................................................................11
9.2 NO IMPLIED LICENSES................................................................................11
9.3 INFRINGEMENT SUITS.................................................................................11
9.4 NO OTHER OBLIGATIONS...............................................................................11
9.5 ENTIRE AGREEMENT...................................................................................12
9.6 CONFLICTING AGREEMENTS.............................................................................12
9.7 GOVERNING LAW......................................................................................12
9.8 DESCRIPTIVE HEADINGS...............................................................................12
9.9 NOTICES............................................................................................12
9.10 NONASSIGNABILITY...................................................................................13
9.11 SEVERABILITY.......................................................................................14
9.12 WAIVER OF BREACH...................................................................................14
9.13 AMENDMENT AND EXECUTION............................................................................14
9.14 COUNTERPARTS.......................................................................................14
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MASTER TECHNOLOGY OWNERSHIP AND LICENSE AGREEMENT
This Master Technology Ownership and License Agreement (the
"Agreement") is effective as of May 5, 2001, 12:01 A.M., P.S.T., (the "Effective
Date") between Adaptec, Inc., a Delaware corporation ("Adaptec"), having an
office at 691 South Milpitas Boulevard, Milpitas, CA 95035, and Roxio, Inc.
("Roxio"), a Delaware corporation ("Roxio"), having an office at 461 South
Milpitas Boulevard, Milpitas, CA 95035.
RECITALS
WHEREAS, the Boards of Directors of each of Adaptec and Roxio have
determined that it is appropriate and desirable for Adaptec to contribute and
transfer to Roxio, and for Roxio to receive and assume, directly or indirectly,
substantially all of the assets and liabilities currently associated with the
Roxio Business and the stock, investments or similar interests currently held by
Adaptec in subsidiaries and other entities that conduct such business (the
"Separation");
WHEREAS, Adaptec has caused Roxio to be incorporated in order to effect
the Separation and Adaptec currently owns all of the issued and outstanding
capital stock of Roxio; and
WHEREAS, the parties intend in this Agreement, including the Exhibits
and Schedules hereto, to set forth the principal arrangements between them
regarding the separation of the Roxio Business with respect to the transfer and
license of the technology relating to the Roxio Business .
NOW, THEREFORE, in consideration of the foregoing and the covenants and
agreements set forth below, the parties hereto agree as follows:
ARTICLE 1
DEFINITIONS
For the purpose of this Agreement the following capitalized terms are
defined in this Article 1 and shall have the meaning specified herein:
1.1 ANCILLARY AGREEMENTS. "Ancillary Agreements" shall have the meaning
set forth in the Master Separation and Distribution Agreement.
1.2 ASSIGNED TECHNOLOGY. "Assigned Technology" means all Technology
listed on Schedule A and the Escrow Materials.
1.3 ASSIGNED TRADEMARKS. "Assigned Trademarks" means the United States
trademarks and the registrations thereof listed on Schedule A.
1.4 CONFIDENTIAL INFORMATION. "Confidential Information" has the
meaning set forth in the Master Confidential Disclosure Agreement.
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1.5 COPYRIGHTS. "Copyrights" mean (i) any copyright in any original
works of authorship fixed in any tangible medium of expression as set forth in
17 U.S.C. Section 101 et. seq., whether registered or unregistered, including
any applications for registration thereof, (ii) any corresponding foreign
copyrights under the laws of any jurisdiction, in each case, whether registered
or unregistered, and any applications for registration thereof, and (iii) moral
rights under the laws of any jurisdiction.
1.6 DISPUTES. "Disputes" has the meaning set forth in the Master
Separation and Distribution Agreement.
1.7 DATABASE RIGHTS. "Database Rights" means any rights in databases
under the laws of the United States or any other jurisdiction, whether
registered or unregistered, and any applications for registration thereof.
1.8 DISTRIBUTION DATE. "Distribution Date" shall have the meaning set
forth in the Master Separation and Distribution Agreement.
1.9 ESCROW MATERIALS. "Escrow Materials" means the materials listed on
Schedule C.
1.10 GENERAL ASSIGNMENT AND ASSUMPTION AGREEMENT. "General Assignment
and Assumption Agreement" means the General Assignment and Assumption Agreement
between the parties.
1.11 INTELLECTUAL PROPERTY RIGHTS. "Intellectual Property Rights" means
Copyrights, Database Rights, trade secrets and any other intellectual property
right, but expressly does not include (i) any trademark, trade name, trade dress
or service mark, or applications for registration thereof or (ii) any Patents or
applications therefor, including any of the foregoing that may be based on
Invention Disclosures that are covered by the Master Patent Ownership and
License Agreement between the parties, but does include trade secret rights in
and to inventions disclosed in such Patent applications and Invention
Disclosures.
1.12 INVENTION DISCLOSURE. "Invention Disclosure" means a disclosure of
an invention (i) written for the purpose of allowing legal and business people
to determine whether to file a Patent application with respect to such invention
and (ii) recorded with a control number in the owning party's records.
1.13 LICENSED MATERIALS. "Licensed Materials" means the materials
listed on Schedule F.
1.14 LICENSED TECHNOLOGY. "Licensed Technology" means the Technology
listed on Schedule B.
1.15 LICENSED TRADEMARKS. "Licensed Trademarks" means the United States
trademarks and the registrations thereof listed on Schedule G.
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1.16 LISTED COMPANIES. "Listed Companies" means those companies listed
on Schedule H.
1.17 MASTER CONFIDENTIAL DISCLOSURE AGREEMENT. "Master Confidential
Disclosure Agreement" means the Master Confidential Disclosure Agreement between
Adaptec and Roxio.
1.18 MASTER PATENT OWNERSHIP AND ASSIGNMENT AGREEMENT. "Master Patent
Ownership and Assignment Agreement" means the Master Patent Ownership and
Assignment Agreement between Adaptec and Roxio.
1.19 MASTER SEPARATION AND DISTRIBUTION AGREEMENT. "Master Separation
and Distribution Agreement" means the Master Separation and Distribution
Agreement between Adaptec and Roxio.
1.20 PATENTS. "Patents" means patents, utility models, design patents,
design registrations, certificates of invention and other governmental grants
for the protection of inventions or industrial designs anywhere in the world and
all reissues, renewals, re-examinations and extensions of any of the foregoing.
1.21 PERSON. "Person" has the meaning set forth in the Master
Separation and Distribution Agreement.
1.22 RESIDUALS. "Residuals" means information retained in the unaided
memory of an individual who has had access to Confidential Information without
conscious attempt by such individual to memorize such information.
1.23 ROXIO BUSINESS. "Roxio Business" has the meaning set forth in the
Master Separation and Distribution Agreement.
1.24 SELL. "Sell" a product means to sell, transfer, lease or otherwise
dispose of a product. "Sale" and "Sold" have the corollary meanings ascribed
thereto.
1.25 SEPARATION DATE. "Separation Date" has the meaning set forth in
the Master Separation and Distribution Agreement.
1.26 SOURCE CODE. "Source Code" means the Licensed Technology software,
and/or derivatives thereof, in human readable source code format.
1.27 SUBSIDIARY. "Subsidiary" has the meaning set forth in the Master
Separation and Distribution Agreement.
1.28 TECHNOLOGY. "Technology" means technological models, algorithms,
manufacturing processes, design processes, behavioral models, logic diagrams,
schematics, test vectors, know-how, computer and electronic data processing and
other apparatus programs and software (object code and source code), databases
and documentation thereof, trade secrets, technical information, specifications,
drawings, records, documentation, works of authorship or other creative works,
websites, ideas, knowledge, data or the like.
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1.29 THIRD PARTY. "Third Party" means a Person other than Adaptec and
its Subsidiaries and Roxio and its Subsidiaries.
ARTICLE 2
OWNERSHIP
2.1 OWNERSHIP OF ASSIGNED TECHNOLOGY. Adaptec hereby grants, conveys
and assigns (and agrees to cause its appropriate Subsidiaries to grant, convey
and assign) to Roxio, by execution hereof (or, where appropriate or required, by
execution of separate instruments of assignment), all its (and their) right,
title and interest in and to the Assigned Technology (and its Intellectual
Property Rights therein), to be held and enjoyed by Roxio, its successors and
assigns. Adaptec further covenants that Adaptec will, without demanding any
further consideration therefor, at the request and expense of Roxio (except for
the value of the time of Adaptec employees), do (and cause its Subsidiaries to
do) all lawful and just acts that may be or become necessary for evidencing,
maintaining, recording and perfecting Roxio's rights to such Assigned Technology
consistent with Adaptec's general business practice as of the Separation Date,
including but not limited to, execution and acknowledgement of (and causing its
Subsidiaries to execute and acknowledge) assignments and other instruments in a
form reasonably required by Roxio for each Copyright or Database Right
jurisdiction.
2.2 ASSIGNMENT OF TRADEMARKS. Adaptec hereby grants, conveys and
assigns (and agrees to cause its appropriate Subsidiaries to grant, convey and
assign) to Roxio, by execution hereof (or, where appropriate or required, by
execution of separate instruments of assignment), all its (and their) right,
title and interest in and to the Assigned Trademarks, together with the goodwill
of the business symbolized by the Assigned Trademarks.
2.3 PRIOR GRANTS. Roxio acknowledges and agrees that the foregoing
assignments are subject to any and all licenses or other rights that may have
been granted by or to Adaptec or its Subsidiaries with respect to the Assigned
Technology and Assigned Trademarks prior to the Separation Date. Adaptec shall
respond to reasonable inquiries from Roxio regarding any such prior grants.
2.4 ASSIGNMENT DISCLAIMER. THE PARTIES ACKNOWLEDGE AND AGREE THAT THE
FOREGOING ASSIGNMENTS ARE MADE ON AN "AS IS," QUITCLAIM BASIS AND THAT NEITHER
PARTY NOR ANY SUBSIDIARY OF EITHER PARTY HAS MADE OR WILL MAKE ANY WARRANTY
WHATSOEVER, EXPRESS, IMPLIED OR STATUTORY, INCLUDING WITHOUT LIMITATION ANY
IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE,
ENFORCEABILITY OR NON-INFRINGEMENT. FURTHER, THE PARTIES
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ACKNOWLEDGE AND AGREE THAT NEITHER PARTY NOR ANY SUBSIDIARY OF EITHER PARTY
SHALL HAVE ANY OBLIGATION UNDER THIS AGREEMENT TO MAINTAIN OR SUPPORT ANY OF THE
ASSIGNED TECHNOLOGY OR TO PROVIDE ANY UPGRADES OR ENHANCEMENTS THERETO TO THE
OTHER PARTY.
2.5 RESIDUALS. Notwithstanding any other provision of this Agreement,
each party (the "Receiving Party") shall be free, and the other party (the
"Disclosing Party") hereby grants to the Receiving Party, except as otherwise
provided in this Section 2.5, the right to use for any purpose the Residuals
resulting from access to or work with the Confidential Information of the
Disclosing Party. The Receiving Party shall have no obligation to pay royalties
for any use of Residuals. However, this Section 2.5 does not grant the Receiving
Party any rights under any patents or copyrights of the Disclosing Party. The
preceding sentence shall not operate to relieve the Receiving Party from paying
royalties to the Disclosing Party under any future patent or copyright license
between them.
2.6 TRANSFER OF ESCROW MATERIALS. As of the Effective Date, Roxio shall
have opened a technology escrow account substantially similar to the Adaptec
technology escrow account in which the Escrow Materials were stored up to the
Effective Date. Upon execution of this Agreement, Adaptec shall authorize its
escrow agent to transfer the Escrow Materials from Adaptec's technology escrow
account to Roxio's technology escrow account.
2.7 NO DELIVERY. Roxio acknowledges that, except as expressly provided
in Sections 2.1, 2.2 and 2.6 above, Adaptec has no obligation to deliver to
Roxio any materials or information, including without limitation any materials
or technical information relating to Assigned Technology or Assigned Trademarks.
Notwithstanding the foregoing sentence if, after the Separation Date, it is
found that the Assigned Technology, Licensed Technology and the Licensed
Materials do not include certain Technology used before the Separation Date and
intended for use by Roxio in the day to day conduct of its business as
contemplated in this Agreement or in the Ancillary Agreements, and such
Technology is not otherwise provided to Roxio under the Ancillary Agreements,
Adaptec will provide Roxio such Technology under the assignments and licenses
granted in this Agreement to the extent it is able to do so, but only to the
extent such Technology is reasonably necessary for Roxio to accomplish such day
to day operation of its business. Such Technology will be provided after good
faith discussion of the subject between Adaptec and Roxio.
ARTICLE 3
LICENSES AND RIGHTS
3.1 LICENSED TECHNOLOGY. On the Effective Date, Adaptec shall make
available to Roxio one (1) copy of the Licensed Materials. Adaptec hereby grants
to Roxio under its rights to the Licensed Technology, a perpetual, worldwide,
fully paid up, non-exclusive license, including the right to grant sublicenses,
to use, reproduce, perform, display and distribute the Licensed Technology as
part of products of the Roxio Business (or products resulting from joint
development between Roxio and one or more third parties or products developed
for Roxio by one or more third
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parties) and any successor products, create derivative works of the Licensed
Technology and reproduce, perform, display and distribute such derivative works
as part of such products and any successor products. Notwithstanding the
foregoing, Roxio agrees to the confidentiality provisions in Schedule D, and
Roxio shall distribute the Licensed Technology or derivatives thereof in Source
Code form only pursuant to a Source Code license containing confidentiality
provisions at least as protective as those set forth in Schedule E. Adaptec
agrees that, for a period of two years following the Separation Date, it shall
not grant to any of the Listed Companies any licenses to the Licensed
Technology.
3.2 LICENSED TRADEMARKS. Adaptec hereby grants to Roxio under its
rights in the Licensed Trademarks a non-assignable, non-transferable, worldwide,
non-exclusive, royalty-free license, without the right to grant sublicenses, to
use the Licensed Trademarks in connection with the promotion, marketing and
distribution of Roxio's products for a period of two (2) years following the
Separation Date, subject to the terms and conditions hereof.
(a) OWNERSHIP. As between Adaptec and Roxio, Roxio acknowledges
and agrees that Adaptec is the sole owner of all right, title, and interest in
and to the Licensed Trademarks and all goodwill associated therewith, including
but not limited to the goodwill associated with Roxio's use of the Licensed
Trademarks. Roxio shall not (a) challenge Adaptec's ownership or use of the
Licensed Trademarks; (b) attempt to register any Licensed Trademarks or any
marks confusingly similar thereto in any jurisdiction in the world; (c) alter or
add to any Licensed Trademarks; or (d) incorporate any Licensed Trademarks into
Roxio's trademarks, product names, service marks, company names, domain names,
or any other similar designations. If, at any time, Roxio acquires any rights
in, or trademark or service mark registrations or applications for, any Licensed
Trademarks by operation of law or otherwise, Roxio will immediately upon request
from Adaptec and at no expense to Adaptec assign such rights, registrations or
applications to Adaptec, along with any and all associated goodwill.
(b) QUALITY CONTROL. Roxio acknowledges that the Licensed
Trademarks represent the goodwill that Adaptec has earned for itself and are
well recognized in the minds of the public, and that it is of great importance
to each party that, in the promotion, marketing and distribution of Roxio's
products, the high standards and reputation established by Adaptec be maintained
at all times. Accordingly, Roxio products, advertising material and promotional
material containing or depicting the Licensed Trademarks on and after the
Separation Date shall be of quality at least as high as that of Roxio products
prior to the Separation Date.
(c) PRIOR APPROVAL. All products, advertising material and promotional material
containing or depicting any of the Licensed Trademarks shall be subject to
Adaptec's prior written approval. Prior to promoting, marketing or distributing
such a product or using such material, Roxio shall submit a sample of such
product or material for Adaptec's review and approval. Adaptec shall have a
period of ten (10) days from its receipt of such material within which to review
such material. If Adaptec does not notify Roxio of Adaptec's disapproval within
such ten (10) day period, such product or material shall be deemed approved. If
Adaptec provides Roxio with notice of
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disapproval, Roxio shall promptly remove the Licensed Trademarks from the
disapproved products or materials.
(d) TERMINATION. Except as otherwise provided in this Section
3.2(d), if Roxio breaches any of its obligations under Section 3.2, Adaptec may
terminate the license granted to Roxio under Section 3.2 upon thirty (30) days
notice to Roxio of such breach if such breach is not completely cured within
such thirty (30) day period. Notwithstanding the foregoing, Adaptec may
terminate the license granted to Roxio under Section 3.2 immediately upon notice
to Roxio without any right to cure if any of the following events occurs: (i)
with respect to the Licensed Trademarks only, if Roxio merges or consolidates
with or into any other corporation, or directly or indirectly sells or otherwise
transfers, sells or disposes of all or a substantial portion of its business or
assets except as permitted or contemplated under Section 9.10
("NONASSIGNABILITY"); (ii) if Roxio ceases or threatens to cease to carry on its
business relating to its use of the Licensed Technology or Licensed Trademarks,
or any substantial part thereof, or becomes insolvent or unable to pay or
discharge its liabilities in the ordinary course of business; or (iii) if Roxio
assigns the whole or any substantial part of its assets or undertakings for the
benefit of creditors. No assignee for the benefit of creditors, receiver,
liquidator, sequestrator, trustee in bankruptcy, sheriff or any other officer of
the court or official charges with taking over custody of Roxio's assets or
business shall have any right to continue the performance or rights of Roxio
under this Agreement.
3.3 NO PATENT LICENSES. Nothing contained in this Agreement shall be
construed as conferring to either party by implication, estoppel or otherwise
any license or right under any Patent or applications therefor, whether or not
the exercise of any right herein granted necessarily employs an invention of any
existing or later issued Patent. The applicable licenses granted by Adaptec to
Roxio with respect to Patents are set forth in a separate Master Patent
Ownership and License Agreement.
3.4 THIRD PARTY TECHNOLOGY. The assignment of any applicable license
agreements with respect to Third Party Technology are set forth in the General
Assignment and Assumption Agreement.
3.5 PERSONAL INFORMATION. Unless different terms of use are agreed to
by the applicable individuals, to the extent any databases within the Assigned
Technology include personal data of any individuals, Roxio covenants to use such
personal data only in the same manner as it was used by Adaptec prior to
assignment hereunder.
ARTICLE 4
CONFIDENTIALITY
The terms of the Master Confidential Disclosure Agreement between the
parties shall apply to any Confidential Information which is the subject matter
of this Agreement.
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ARTICLE 5
NO TERMINATION
Each party acknowledges and agrees that its remedy for breach by the
other party of any provision hereof shall be, subject to the requirements of
Article 6, to bring a claim to recover damages subject to the limits set forth
in this Agreement and to seek any other appropriate equitable relief, other than
termination of this Agreement. For the avoidance of doubt, the parties intend
that this Agreement continue in perpetuity. ARTICLE 6.........
DISPUTE RESOLUTION
Resolution of any and all Disputes arising from or in connection with
this Agreement shall be exclusively governed by and settled in accordance with
the provisions of this Article 6.
6.1 NEGOTIATION. The parties shall make a good faith attempt to resolve
any Dispute arising out of or relating to this Agreement through informal
negotiation between appropriate representatives from each of Adaptec and Roxio.
If at any time either party feels that such negotiations are not leading to a
resolution of the Dispute, such party may send a notice to the other party
describing the Dispute and requesting a meeting of the senior executives from
each party. Within ten (10) business days after such notice of a Dispute is
given, each party shall select appropriate senior executives (e.g., director or
V.P. level) of each party who shall have the authority to resolve the matter and
shall meet to attempt in good faith to negotiate a resolution of the Dispute
prior to pursuing other available remedies. During the course of negotiations
under this Section 6.1, all reasonable requests made by one party to the other
for information, including requests for copies of relevant documents, will be
honored. The specific format for such negotiations will be left to the
discretion of the designated negotiating senior executives but may include the
preparation of agreed upon statements of fact or written statements of position
furnished to the other party. In the event that any Dispute arising out of or
related to this Agreement is not settled by the parties within thirty (30) days
after the first meeting of the negotiating senior executives, either party may
commence litigation with respect to the Dispute. However, except as provided
below in Section 6.2, neither party shall commence litigation against the other
party to resolve the Dispute (i) until the parties try in good faith to settle
the Dispute by negotiation for at least thirty (30) days after the first meeting
of the negotiating senior executives or (ii) until forty (40) days after notice
of a Dispute is given by either party to the other party, whichever occurs
first.
6.2 PROCEEDINGS. Any Dispute regarding the following is not required to
be negotiated prior to seeking relief from a court of competent jurisdiction:
breach of any obligation of confidentiality; infringement, misappropriation, or
misuse of any intellectual property right; or any other claim where interim
relief from the court is sought to prevent serious and irreparable injury to a
party. However, the parties shall make a good faith effort to negotiate such
Dispute, according to Section 6.1, while such court action is pending.
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6.3 CONTINUITY OF SERVICE AND PERFORMANCE. Unless otherwise agreed in
writing, the parties will continue to provide service and honor all other
commitments under this Agreement and each Ancillary Agreement during the course
of dispute resolution pursuant to the provisions of this Article 6 with respect
to all matters not subject to such dispute, controversy or claim.
ARTICLE 7
LIMITATION OF LIABILITY
IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES BE LIABLE TO THE
OTHER PARTY OR ITS SUBSIDIARIES FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT,
INCIDENTAL OR PUNITIVE DAMAGES OR LOST PROFITS, HOWEVER CAUSED AND ON ANY THEORY
OF LIABILITY (INCLUDING NEGLIGENCE) ARISING IN ANY WAY OUT OF THIS AGREEMENT,
WHETHER OR NOT SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES;
PROVIDED THAT THE FOREGOING LIMITATIONS SHALL NOT LIMIT EACH PARTY'S
INDEMNIFICATION OBLIGATIONS FOR LIABILITIES TO THIRD PARTIES AS SET FORTH IN THE
INDEMNIFICATION AND INSURANCE MATTERS AGREEMENT.
ARTICLE 8
REPRESENTATIONS AND WARRANTIES
Each party represent and warrants that as of the Effective Date it has
the full legal right, power and authority to enter into and perform this
Agreement.
ARTICLE 9
MISCELLANEOUS PROVISIONS
9.1 DISCLAIMER. EACH PARTY ACKNOWLEDGES AND AGREES THAT ALL TECHNOLOGY,
TRADEMARKS AND ANY OTHER INFORMATION OR MATERIALS PROVIDED HEREUNDER IS PROVIDED
ON AN "AS IS" BASIS, AND THAT NEITHER PARTY NOR ANY OF ITS SUBSIDIARIES MAKES
ANY REPRESENTATIONS OR EXTENDS ANY WARRANTIES WHATSOEVER, EXPRESS, IMPLIED OR
STATUTORY, WITH RESPECT THERETO, INCLUDING WITHOUT LIMITATION ANY IMPLIED
WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE,
ENFORCEABILITY OR NON-INFRINGEMENT. Without limiting the generality of the
foregoing, neither party nor any of its Subsidiaries makes any warranty or
representation that any manufacture, use, importation, offer for sale or sale of
any product or service will be free from infringement of any Patent or other
intellectual property right of any Third Party.
9.2 NO IMPLIED LICENSES. Nothing contained in this Agreement shall be
construed as conferring any rights by implication, estoppel or otherwise, under
any intellectual property right, other than the rights expressly granted in this
Agreement with respect to the Assigned Technology and the Licensed Technology.
Neither party is required hereunder to furnish or disclose to the other any
technical or other information, except as specifically provided herein.
9.3 INFRINGEMENT SUITS. Neither party shall have any obligation
hereunder to institute any action or suit against Third Parties for infringement
of any Copyrights or Database Rights or misappropriation of any trade secret
rights in or to any Technology licensed to the other party hereunder, or to
defend any action or suit brought by a Third Party which challenges or concerns
the validity of any of such rights or which claims that any Technology assigned
or licensed to the other party hereunder infringes any Patent, Copyright,
Database Right or other intellectual property right of any Third Party or
constitutes a misappropriated trade secret of any Third Party. Adaptec shall not
have any right to institute any action or suit against Third Parties for
infringement of any of the Copyrights or Database Rights in or to the Assigned
Technology.
9.4 NO OTHER OBLIGATIONS. NEITHER PARTY ASSUMES ANY RESPONSIBILITIES OR
OBLIGATIONS WHATSOEVER, OTHER THAN THE RESPONSIBILITIES AND OBLIGATIONS
EXPRESSLY SET FORTH IN THIS AGREEMENT OR A SEPARATE WRITTEN AGREEMENT BETWEEN
THE PARTIES. Without limiting the generality of the foregoing, neither party,
nor any of its Subsidiaries, is obligated under this Agreement to provide any
technical assistance.
9.5 ENTIRE AGREEMENT. This Agreement, the Master Separation and
Distribution Agreement and the other Ancillary Agreements and the Exhibits and
Schedules referenced or attached hereto and thereto, constitute the entire
agreement between the parties with respect to the subject matter hereof and
shall supersede all prior written and oral and all contemporaneous oral
agreements and understandings with respect to the subject matter hereof. This
Agreement shall prevail in the event of any conflicting terms or legends which
may appear on any portion of the Assigned Technology or the Licensed Technology.
9.6 CONFLICTING AGREEMENTS. In the event of a conflict between this
Agreement and the Master Separation and Distribution Agreement or any Ancillary
Agreement executed in connection herewith, the provisions of this Agreement
shall prevail.
9.7 GOVERNING LAW. This Agreement shall be construed in accordance with
and all Disputes hereunder shall be governed by the laws of the State of
California, excluding its conflict of law rules and the United Nations
Convention on Contracts for the International Sale of Goods. The Superior Court
of Santa Clara County and/or the United States District Court for the Northern
District of California, San Jose Division, shall have jurisdiction and venue
over all Disputes between the parties that are permitted to be brought in a
court of law pursuant to Article 6 above.
9.8 DESCRIPTIVE HEADINGS. The headings contained in this Agreement, in
any Exhibit or Schedule hereto and in the table of contents to this Agreement
are for reference purposes only and shall not affect in any way the meaning or
interpretation of this Agreement. Any capitalized term
<PAGE>
used in any Exhibit or Schedule but not otherwise defined therein, shall have
the meaning assigned to such term in this Agreement. When a reference is made in
this Agreement to an Article or a Section, Exhibit or Schedule, such reference
shall be to an Article or Section of, or an Exhibit or Schedule to, this
Agreement unless otherwise indicated.
9.9 NOTICES. Any notice, demand, offer, request or other communication
required or permitted to be given by either party pursuant to the terms of this
Agreement shall be in writing and shall be deemed effectively given the earlier
of (i) when received, (ii) when delivered personally, (iii) one (1) Business Day
after being delivered by facsimile (with electronic receipt of appropriate
confirmation), (iv) one (1) Business Day after being deposited with a nationally
recognized overnight courier service or (v) four (4) days after being deposited
in the U.S. mail, First Class with postage prepaid, and addressed to the
attention of:
IF TO ADAPTEC, INC.:
Adaptec, Inc.
691 S. Milpitas Blvd.
Milpitas, CA 95035
Attention: Vice President and General Counsel
Facsimile No.: (408) 957-7137
with a copy to:
Wilson Sonsini Goodrich & Rosati, Professional Corporation
650 Page Mill Road
Palo Alto, CA 94304-1050
Attention: Henry P. Massey, Jr.
Facsimile No.: 650-493-6811
IF TO ROXIO, INC.:
Roxio, Inc.
461 South Milpitas Blvd.
Milpitas, CA 95035
Attention: CEO
Facsimile No.: 408-957-7963
with a copy to:
Gray Cary Ware & Freidenrich LLP
400 Capitol Mall, Suite 2400
Sacramento, CA 95814
Attention: Kevin A. Coyle
Facsimile No.: 916-930-3201
<PAGE>
Adaptec and Roxio may substitute a different address or facsimile number, from
time to time, if such substitute is provided to the intended notice recipient in
writing by notice given in the manner provided in this Section 9.8.
9.10 NONASSIGNABILITY. Neither party may, directly or indirectly, in
whole or in part, whether by operation of law or otherwise, assign or transfer
this Agreement, without the other party's prior written consent, and any
attempted assignment, transfer or delegation without such prior written consent
shall be voidable at the sole option of such other party. Notwithstanding the
foregoing, each party (or its successive assignees or transferees hereunder)
may, without such consent, assign this Agreement to (i) an entity that succeeds
to all or substantially all of the business or assets of such party, or (ii) an
entity involved in a merger, acquisition or other corporate reorganization in
which such party is a constituent corporation, as long as such entity agrees to
accept all of the terms set forth herein. Without limiting the foregoing, this
Agreement will be binding upon and inure to the benefit of the parties and their
permitted successors and assigns.
9.11 SEVERABILITY. The parties hereto have negotiated and prepared the
terms of this Agreement in good faith with the intent that each and every one of
the terms, covenants and conditions herein be binding upon and inure to the
benefit of the respective parties. Accordingly, if any one or more of the terms,
provisions, promises, covenants or conditions of this Agreement or the
application thereof to any person or circumstance shall be adjudged to any
extent invalid, unenforceable, void or voidable for any reason whatsoever by a
court of competent jurisdiction, such provision shall be as narrowly construed
as possible, and each and all of the remaining terms, provisions, promises,
covenants and conditions of this Agreement or their application to other persons
or circumstances shall not be affected thereby and shall be valid and
enforceable to the fullest extent permitted by law. To the extent this Agreement
is in violation of applicable law, then the parties agree to negotiate in good
faith to amend the Agreement, to the extent possible consistent with its
purposes, to conform to law.
9.12 WAIVER OF BREACH. The waiver by either party hereto of a breach or
violation of any provision of this Agreement shall be made only in a writing
signed by the party making such waiver, and shall not operate as, or be
construed to constitute, a waiver of any subsequent breach of the same or
another provision hereof.
9.13 AMENDMENT AND EXECUTION. This Agreement and amendments hereto
shall be in writing and executed in multiple copies via facsimile or otherwise
on behalf of Adaptec and Roxio by their respective duly authorized officers or
representatives. Each multiple copy shall be deemed an original, but all
multiple copies together shall constitute one and the same instrument.
9.14 COUNTERPARTS. This Agreement, including the Schedules and Exhibits
hereto and the other documents referred to herein, may be executed in
counterparts, each of which shall be deemed to be an original but all of which
shall constitute one and the same agreement.
<PAGE>
WHEREFORE, the parties have signed this Master Technology Ownership and
License Agreement effective as of the date first set forth above.
ADAPTEC, INC. ROXIO, INC.
By: /s/ Robert N. Stephens By: /s/ Wm. Christopher Gorog
------------------------------- --------------------------------
Name: Robert N. Stephens Name: Wm. Christopher Gorog
---------------------------- ------------------------------
Title: President, Title: President and
Chief Executive Officer Chief Executive Officer
---------------------------- -----------------------------
[SIGNATURE PAGE TO MASTER TECHNOLOGY OWNERSHIP
AND LICENSE AGREEMENT]